The Shield of Section 18: Protecting Prior Adopters from Subsequent Commercial Dominance

Introduction

For commercial brands, the race to secure a trademark is fought on two distinct fronts: at the registry desk and in the marketplace. Recently, the Delhi High Court has spotlighted this delicate balance in its ruling in Parle Products Pvt. Ltd. v. The Registrar of Trademarks & Anr.^[1], and has  reinforced that the rights of a senior adopter or the prior filer shall triumph over the rights of a subsequent user’s market evidence. This judgment underscores that even extensive commercial presence shall not strip away the legal protection granted to the party that stepped into the registry first, cementing Section 18 of the Trade Marks Act as an unassailable shield for early applicants.

Facts of the Case

The Delhi High Court was approached by the Appellant, challenging the impugned order dated passed by the Respondent Number 1/the Registrar of Trade Marks in Opposition filed by the Appellant against impugned Trademark Application of the Respondent Number 2/Avon Agro Industries in Class 30.

Avon Agro Industries (Respondent Number 2) applied for the word mark "20-20" under Class 30 for biscuits and confectionery on September 27, 2007, on a "proposed to be used" basis. Exactly one week later, on October 4, 2007, Parle Products (Appellant) applied for the identical mark under the same class, also on a "proposed to be used" basis. However, Respondent Number 2’s application faced a prolonged 17-year administrative and appellate delay at the Registry and in the meantime, the Appellant launched its "20-20" biscuits commercially between 2007 and 2008. Over the next nearly two decades, the Appellant built immense nationwide goodwill, secured separate registrations for the mark in 2017, and generated massive sales under its "20-20" brand.     

In 2020, the Trademark Registry finally advertised Respondent Number 2’s original 2007 application and the Appellant opposed the same, arguing that its immense market presence made it the de facto "prior user" and that Respondent Number 2’s prolonged non-use amounted to abandonment. The Registrar rejected Parle’s opposition, and Parle appealed to the Delhi High Court.

Court’s decision and Analysis

The Delhi High Court dismissed the appeal and upheld Respondent Number 2’s priority. The Court held that between two “proposed to be used” applicants, the senior adopter or the earlier applicant holds a superior statutory right. The Court held that the Appellant’s subsequent market success could not strip away the rights of the Respondent Number 2’s one-week prior filing advantage. The Court also observed that Respondent Number 2 could not be penalized for administrative delays since it had earnestly pursued its Application for 17 years.

The court held that “when two entities apply for a similar, identical or a deceptively similar mark, that too on a “proposed to be used” basis, under the provisions of the Section 18 of the Act, subsequent use of the marks applied for by one of the parties would not enure to its benefit in any manner and such prior use in the eyes of law shall be inconsequential. Thus, the only firm conclusion in such circumstances is that the senior adopter would oust the junior adopter for the purposes of registration under section 18 of the Act.”

Applying this principle, the Court observed that Respondent Number 2 was undeniably the senior adopter, having filed its trademark application on September 29, 2007, a week before the Appellant's application on October 4, 2007. Accordingly, the Court concluded that the Appellant’s commercial use of the '20-20' mark since 2009 held no legal weightage against the prior adoption by Respondent Number 2. In the Court's view, this established ratio was directly applicable and disposed of the Appellant's claims.

Conclusion

The Delhi High Court’s decision in this case clearly confirms that statutory priority matters more than commercial use in trademark law. By shielding a senior adopter from the subsequent market dominance of a corporate giant, the Court sent a clear message: the integrity of the registration timeline under Section 18 of the Trade Marks Act must not be undermined by later commercial success. This judgment establishes that a minor advantage in filing, even by a one-week lead, as was the present case, creates a strong legal right that cannot be erased by later market activity. Furthermore, by refusing to penalize the prior filer for protracted administrative delays, the Court protected the legitimate expectations of early applicants. 

Pari Malhotra

Associate | Attorney at Law

pari.malhotra@iprattorneys.com

References:

^[1] C.A.(COMM.IPD-TM) 49/2025 & I.A.19990/2025